Selected decisions 

Although the "could" question in the could-would approach may often require little or no justification, it cannot be ignored in cases where there is not self-evidently a realistic path or "workable route" from the starting point to the claimed invention. That is the case if the distinguishing features cannot reasonably be combined with the closest prior art to obtain the claimed invention.

In such a situation, the invention is not rendered obvious by that prior art and the question whether the distinguishing features achieve a technical effect over the closest prior art is essentially meaningless.

When assessing compliance of a European patent application with Article 123(2) EPC, it has to be established whether or not the application has been amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.

If the claims filed on entry into the European phase do not correspond to those of the application as filed, those claims filed on entry into the European phase do not provide a basis for assessment of the compliance of amendments with Article 123(2) EPC.

Decision G 0001/23 does not exclude that a non reproducible product be selected as the closest prior art. Instead the specific circumstances of the case should be analysed.

The extent to which a non-reproducible product must be modified to obtain the claimed subject-matter, and the level of knowledge about that product and its manufacture required to achieve it, are not yet relevant for determining whether the product can be regarded as the closest prior art. These aspects instead relate to later stages of the problem-solution approach, namely identifying the distinguishing features between the product and the claimed subject-matter and/or assessing whether the skilled person, starting from that product, would have been able to obtain the claimed one (Reasons 5.1.3 to 5.1.11).

While G 3/97 and G 4/97 may not explicitly state that any opposition by a straw man is admissible, in the board's reading, they essentially conclude that opposition filed by a straw man on behalf of an anonymous party is not objectionable merely because the opponent is acting as a straw man.

(Reasons 4.5)

In the board's view, the formulation in claim 1 of the main request that additional welded point(s) is/are "to be added" to the automotive body to improve its stiffness during driving at least implicitly specifies a further technical use (reasons, point 4.4).

The board considers that it is implicit from claim 1 that the additional welded points of which the locations are determined will be added to the automotive body (reasons, points 37 and 43). The technical effect is therefore considered to be achieved by the distinguishing features over the whole scope claimed.

The appellant considered the objective technical problem as being how "to design an automotive body in which the stiffness of the automotive body during driving is improved" (reasons, point 25).

One distinguishing features of claim 1 of the main request having regard to the disclosure of document D1 specifies that the load applied has a different magnitude and direction at each joining portion (reasons, points 32.1 and 23).

In the board's view, since the use of the analysis results is defined in the claim as being "for automotive body designing", leaving it open which further steps, technical or not, are performed with the analysis results, a potential further selection of a particular automotive body might also be based on the visual characteristics or appearance of the automotive body. However, the board is of the opinion that the selection of the automotive body is, in addition, also restricted to the selected additional welded points to be added to the automotive body (reasons, point 34.1).

The board notes that the optimisation analysis on the welding candidates applies at least one of the load, of which magnitude and direction are different at each joining portion. An additional welded point or an additional welded location that satisfies the optimization analysis conditions, including maximising absorbed energy, is selected (reasons, point 36).

The analysis results used in the automotive body designing are, for example, "automotive body displacement amount". The possible use by the user of the displayed analysis results might be a cognitive exercise such as selecting the automotive body corresponding to the lowest displacement amount (see Figures 19A to 19D and 20A to 20D of the application as filed and decision G 1/19, point 138), but the board considers that the step of selecting the additional welded points contributes to the technical character of the invention (reasons, point 44).

The board further notes that the additional welded points of which the locations are determined or selected are "to be added to the automotive body" ("to improve the stiffness of the automotive body during driving"). In the board's view this wording at least implicitly specifies a further technical use (see decision G 1/19, points 124 and 137) (reasons, point 37).

The board considers that, even if the automotive body was a "prototype" and the additional welded points were added to this "prototype", this "prototype" would still be a physical object having at least some of the features of an automotive body (reasons, point 45).

The board notes that the decision of the Enlarged Board of Appeal G 1/19, point 111 requires a simulation to be "accurate enough" or a simulation that reflects "reality" "accurately enough". In the present case, the automotive model constituted by the automotive body frame model and the chassis model together with the welded points at the joining portion(s) is considered to reflect an automotive body (as "reality") "accurately enough" (reasons, point 46).

1. Holding oral proceedings before an opposition division by videoconference against the will of a party does not, as such, infringe that party's right to be heard, even in the absence of travel restrictions. Any alleged infringement must be substantiated by the specific circumstances of the individual case (see Reasons 2.1 to 2.7).

2. In the assessment of inventive step of a device, i.e. a physical artefact, advantages of the manufacturing process do not carry over to the claimed device itself. The relevant case law is that concerning product-by-process claims, not that in the field of chemistry relating to intermediate chemical compounds arising in a non-obvious chemical process (see Reasons 3.12 to 3.15).